OPPOSITION No B 2 668 013

Axon Digital Design B.V., Lange Wagenstraat 55, 5126 BB Gilze, the Netherlands (opponent), represented by Onel Trademarks, Leeuwenveldseweg 12, 1382 LX Weesp, the Netherlands (professional representative)

a g a i n s t

Zhongxing Communication Shareholding Co. Ltd., Zhongxing Tongxun BLDG., Keji South Rd., Hi-Tech & New IND Park, Nanshan District, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 18/10/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 668 013 is upheld for all the contested services, namely:

Class 38: Television broadcasting; Communications by cellular phones; Communications by computer terminals; Message sending; Telephone services; Communications by telephone; Teleconferencing services; Streaming of data; Radio communications; Providing telecommunications connections to a global computer network.

2.        European Union trade mark application No 14 747 811 is rejected for all the contested services. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 14 747 811 , namely against all the services in Class 38.

The opposition is based on, inter alia, Benelux trade mark registration No 836 591 for the word mark ‘AXON’.

The opponent invoked Article 8(1)(b) EUTMR in relation to all of the earlier rights.

PRELIMINARY REMARK I – THE APPLICABLE REGULATIONS

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

PRELIMINARY REMARK II

The applicant argues that, as the opposition is based on earlier marks that are not registered for Class 38, the opposition is unfounded.

The Opposition Division notes that there is no legal requirement in relation to the specific goods and services that must be covered by the earlier marks for them to be invoked as the basis of the opposition. In fact, the applicant has not submitted evidence of any kind to support its arguments in this regard.

Therefore, the applicant’s argument must be set aside.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based. For the purpose of procedural economy, the analysis of the proof of use below will be carried out in relation to earlier Benelux trade mark registration No 836 591 ‘AXON’, referred to in the ‘REASONS’ section above.

The request in relation to earlier Benelux trade mark registration No 836 591 ‘AXON’ was submitted in due time and is admissible, as this earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 07/12/2015. The opponent was therefore required to prove that the trade mark on which, inter alia, the opposition is based, namely that referred to in the previous paragraph, was put to genuine use in Benelux from 07/12/2010 to 06/12/2015, inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 9: Apparatus and instruments for transmission, recording, reproduction, processing, converting, routing, coding and decoding of sound and images; modular systems, routers, including modular routers, main control systems, main switches, digital TV and audio routers, routers using time switches, apparatus for use of storage of data, intercom systems.

Class 35: Advertising, promotion, business agency services in purchase and sale and import and export of products mentioned in class 9.

Class 42: Technical consultancy and support regarding use and application of goods mentioned in class 9; development of goods mentioned in class 9 (design services).

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 30/11/2016, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 05/02/2017 to submit evidence of use of the earlier trade marks. This time limit was later extended until 05/04/2017. On 04/04/2017, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep the commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Introduction of Axon: description of the opponent’s company, its presence on the market and reference to its three core product areas.

According to the opponent, Axon is defined as a technology pioneering company, based in the Netherlands, and a leader in broadcast network infrastructure products and solutions. It explains that Axon is present in many different countries and, in particular, in some countries of the European Union, such as Germany, Benelux and the UK. According to the opponent, the three core product areas of Axon are synapse modular AV processing (including multiview, master control and routing), its cerebrum monitoring and control system, and TRACS compliance recording. It indicates that the solutions offered to Axon’s clients range from live production to play-out and master control.

• Item 1: invoices dated in the period 2010-2015, all of which are within the relevant period of time and in English. They all show use of the earlier mark, both as a word mark throughout the documents (e.g. as part of the website address, email addresses, etc.) and as a large depiction of the mark  in the upper right-hand corner of the documents.

These invoices were issued to clients in Denmark, Belgium, the Netherlands, France, Sweden and Italy. Due to a confidentiality request, no detailed information can be given about the clients to whom the invoices were issued. However, the names of the clients include words that are clear references to the market sector to which the relevant goods and services belong.

The invoices contain references to article codes, accompanied by brief descriptions. The descriptions that are understandable refer to, at least, a significant number of different goods in Class 9, such as ‘panel’, ‘digital audio embedder’, ‘coiled accoustic eartube’, ‘headset station’, ‘HD Video Delay’, ‘Digital. Audio. Loudn. Contr’ (which also appears in Item 5 as ‘loudness control’), ‘shuffler’, ‘Dual analog audio DA’, ‘encoder’ and ‘decoder’, ‘analog video distribution amplified’, ‘dual analog audio DA’ and ‘server software’.

• Item 2: article from FKT, dated 16/09/2014 (i.e. within the relevant period of time) and in German. According to the opponent’s description of this item of evidence, the article refers to goods and services in Classes 9 and 38 (which are listed by the opponent in the description of the evidence submitted). This can also be inferred from the use in the text of different terms that are understandable in English, despite the document not being translated. Some of those terms are ‘software’, ‘designer-programm’, ‘kommunikationssystem’, etc. The text contains references to the trade mark ‘Axon’ (as a word mark).

• Item 3: according to the opponent, this item of evidence refers to a seminar. It seems to be a press article or an informational document. It contains the indication ‘FKT-Channel’, is in German, is dated 07/11/2013 and contains a geographical reference to Köln (i.e. the German name for Cologne, Germany). The trade mark is shown in a small picture, next to the text, as a figurative mark (see the depiction in Item 1).

• Item 4: Axon catalogues dated 2009-2010 and 2012-2013 in which the trade mark is used as a figurative mark (see the depiction in Item 1) and as a word mark. These catalogues also contain references to some of the relevant goods in the form of pictures with the indication ‘Modular interfacing and conversion’.

This item of evidence also includes the list of Axon offices in 2011, 2012, 2013 and 2015, demonstrating the presence of Axon in the Netherlands (headquarters) and in other EU countries such as the United Kingdom, Germany, France and Belgium. These documents contain the earlier mark, both as a figurative mark (see depiction in Item 1) and as a word mark, appearing also as part of email addresses and websites.

        

Finally, this item of evidence contains a picture of an Axon stand, in which the figurative version of the mark is clearly visible (see the depiction in Item 1), but it does not contain any reference to the date or place of the fair or exhibition in which the stand was used. It also contains a picture of a promotional calendar for Axon, showing the month July 2014. The mark appears as a figurative mark in the calendar, and it also appears as part of a website address accompanied by a picture of some of the goods involved.

• Item 5: extracts from the Wayback Machine website. The Internet Archive Wayback Machine is a service that allows people to visit archived versions of websites. Visitors to the Wayback Machine can type in a URL, select a date range and then begin surfing an archived version of the website.

These documents consist of screenshots of the results obtained for the content of the website www.axon.tv from February 2011 to April 2014.

They contain depictions of the earlier mark in the same ways as described in the above items. In some of the documents, the figurative mark is accompanied by the expression ‘THE HEART OF BROADCAST’, as follows:

These documents contain references to some of the goods and services involved, such as ‘production & transmission tool for 3D’, ‘compliance recording, video logging and archiving’ and ‘loudness control’ (which appears in the invoices of Item 1 as ‘Dig. Aud. Loudn. Contr’), and some pictures of the goods. They also contain a list of ‘upcoming events’ of Axon (e.g. exhibitions) and information on job vacancies in the Axon company, such as for an Area Sales Manager in the UK and a Sales Manager in Germany.

Finally, these documents contain references to different goods and services, such as ‘audio video bridging (AVB)’, ‘mobile applications frame’, ‘master control: synmc’, ‘neuron Ethernet AVB’, ‘networked live media production’, etc.

The documents listed above clearly show use of the earlier mark in the relevant territory (i.e. Benelux). This can be inferred from the addresses in the invoices and the currency mentioned (i.e. euros). Therefore, the evidence relates to the relevant territory.

All the evidence is dated within the relevant period.

The earlier mark is considered to have been used as registered. The variations in the way it appears are limited to it being depicted in a slightly stylised way (which is not capable of altering its depiction in a substantial way) and to it being accompanied by the registered trade mark symbol, ® (which is frequently used to inform consumers of the fact that a sign is registered); it is also sometimes accompanied by the descriptive indication ‘THE HEART OF BROADCAST’ or by ‘www.’ (as part of the website address) or ‘@’ (as part of the email address). However, these modifications do not alter the overall impression created by the mark and they are all considered to constitute use of the mark as registered.

The documents filed and described above provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of earlier Benelux trade mark registration No 836 591 ‘AXON’ during the relevant period in the relevant territory.

In the present case, the evidence shows genuine use of the trade mark for, at least, the following goods:

Class 9: Apparatus and instruments for transmission, recording, reproduction, processing, converting, routing, coding and decoding of sound and images; intercom systems.

Even though proof of use was also submitted in relation to other goods or services, for the purpose of procedural economy the Opposition Division will consider only the abovementioned goods in its further examination of the opposition.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Benelux trade mark registration No 836 591 ‘AXON’ (word mark) and in relation to the goods for which genuine use has been proven (see the previous section).

1. The goods and services

The goods on which the opposition is based are the following:

Class 9: Apparatus and instruments for transmission, recording, reproduction, processing, converting, routing, coding and decoding of sound and images; intercom systems.

The contested services are the following:

Class 38: Television broadcasting; Communications by cellular phones; Communications by computer terminals; Message sending; Telephone services; Communications by telephone; Teleconferencing services; Streaming of data; Radio communications; Providing telecommunications connections to a global computer network.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 38

The contested television broadcasting; communications by cellular phones; communications by computer terminals; message sending; telephone services; communications by telephone; teleconferencing services; streaming of data; radio communications; providing telecommunications connections to a global computer network consist mainly of the transmission of images, sound and/or other kinds of data and all fall into the broad categories of communication and telecommunication services.

The opponent’s goods in Class 9 consist of the apparatus used in the transmission of the images, sound and/or other kinds of data to which the contested services refer. Therefore, the contested services are similar to the opponent’s goods, since they coincide in their purpose, are complementary, coincide in their distribution channels and points of sale, and frequently target the same consumers.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be similar are directed at both the public at large and professionals. The degree of attention paid by the consumers during the purchase of these services is deemed to vary from average to higher than average, depending on the characteristics of the services (e.g. if they are expensive and/or infrequent purchases or if they are purchased for professional purposes, or if the choice of service can have an economic impact on the business).

3. The signs

AXON
Earlier trade mark	Contested sign

The relevant territory is Benelux (i.e. Belgium, the Netherlands and Luxembourg).

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The applicant claims that the word ‘AXON’ has a meaning for the public in the relevant territory. The Opposition Division notes that, even though a small part of the relevant public (i.e. specialists in neurological science) will perceive the word ‘AXON’ as the name given to a part of a nerve cell, for the vast majority of consumers in the relevant territory (i.e. French-, German- and Dutch-speaking consumers), the word ‘AXON’, contained in both marks, is meaningless, and it therefore has an average degree of distinctive character for them. The Opposition Division will proceed by taking into account the perception of the vast majority of consumers in the relevant territory, by considering the word ‘AXON’ as meaningless and as having an average degree of distinctive character, since this constitutes the best-case scenario for a likelihood of confusion to arise.

However, the word ‘ELITE’ in the contested sign exists as such in French, German and Dutch, and it is an adjective used to indicate, inter alia, that something or someone is the best or most select, in comparison with others. The word ‘ELITE’ has a lower than average degree of distinctive character, as it is at least allusive of the characteristics of the services, since it implies that they are the best in some way or the most select, compared with other services.

The contested sign has no elements that are more dominant (visually eye-catching) than other elements, despite the fact that the word ‘AXON’ is depicted in slightly larger letters than the word ‘ELITE’ and that the former is in bold.

The contested mark has a slightly stylised typeface, but it is very similar in appearance to a regular font in upper case. However, even if the typeface is perceived as a particularity of the mark, it must be noted that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In the present case, it is relevant to note that the coinciding word ‘AXON’ is found at the beginning of the contested mark and so will catch the consumer’s attention first.

It must be also noted that the coinciding word constitutes the entire earlier mark. Therefore, the earlier mark is entirely contained in the contested sign, and the coinciding word will be the first element that is pronounced when referring to the contested sign verbally.

Visually, the signs coincide in the distinctive word ‘AXON’ and differ in the word ‘ELITE’ of the contested mark, which is distinctive to only a low degree.

The coinciding word ‘AXON’ constitutes the entire earlier mark, and consumers will perceive it as clearly contained in the contested sign. As explained in the description of the signs above, the coinciding word will be the first element that is read and pronounced, and therefore is the element that will first catch the consumer’s attention, in the contested mark.

Taking into account all of the above, and the reduced weight of the differing element ‘ELITE’ (which is distinctive to only a low degree), it is considered that the marks are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‘AXON’, present identically in both signs. The pronunciation differs in the sound of the word ‘ELITE’ of the contested mark, which has no counterpart in the earlier mark.

For the same reasons as described in the visual comparison above regarding the impact of each of the elements of the marks, it is considered that the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the word ‘ELITE’ in the contested mark, as explained above, the earlier mark has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods and services are similar.

The signs are visually and aurally highly similar and are not conceptually similar.

The signs coincide in the distinctive word ‘AXON’ and differ in the word ‘ELITE’ of the contested mark, which is distinctive to only a low degree. In addition, the coinciding word ‘AXON’ constitutes the entire earlier mark, and consumers will perceive it as clearly contained in the contested sign. This coinciding word will be the first element that is read and pronounced in the contested mark (reading from left to right), and therefore is the element that will first catch the consumer’s attention in that sign.

The average consumer of the category of services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, according to the principle of imperfect recollection, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. Based on this, consumers might believe that the conflicting goods and services found to be similar come from the same undertaking or economically-linked undertakings. Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In addition, having regard to the principle of interdependence, it is considered that the coincidences between the signs, together with the similarity between the goods and services, are clearly sufficient to outweigh their dissimilarities and may induce at least part of the public to believe that the conflicting goods and services come from the same undertaking or economically linked undertakings.

It is nowadays a frequent market practice for companies to create new trade marks or versions of trade marks for new lines of products or to obtain modernised versions of the signs (e.g. by adding descriptive elements to them, by modifying slightly their colour or typeface, etc.). In the present case, taking into account the characteristics of the contested sign (i.e. the fact that it contains the earlier mark in its entirety in its first position, followed by an element with a low degree of distinctiveness that is allusive of the characteristics of the services), it cannot be excluded that at least part of the public may perceive the contested sign as a variation of the earlier mark, and therefore perceive the signs as having a common commercial origin.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 836 591 ‘AXON’ (word mark). It follows that the contested trade mark must be rejected for all the contested services.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Vít MAHELKA

María del Carmen SUCH SANCHEZ

Richard BIANCHI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.